Decisions in Brief

By John C. Gatz

Published in Landslide Vol. 11 No. 4, ©2019 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.


Government Oversight Makes Law Annotations Unprotectable

Code Revision Commission ex rel. General Assembly of Georgia v. Public.Resource.Org, Inc., 128 U.S.P.Q.2d 1338 (11th Cir. 2018). The plaintiff (Code Revision Commission) supervised the work of a hired legal vendor for the ongoing publication and maintenance of the Official Code of Georgia Annotated (OCGA). Annotations to the OCGA were prepared by the vendor, approved by the Commission, and are a part of the official code. These annotations do not have the force of law.

Defendant Public.Resource.Org (PRO) is a nonprofit organization with a mission of improving public access to government records. In 2013, PRO purchased all 186 volumes of the print version of the OCGA and its supplements, scanned them, and uploaded them to its website to be freely accessible to the public. It also placed digital copies of the OCGA onto USB drives and mailed them to various Georgia legislators, among other digital distributions. The Commission file a complaint seeking injunctive relief against PRO’s copying and distribution of the copyrighted annotations in the OCGA.

The Eleventh Circuit concluded that no valid copyright interest can be asserted in any part of the OCGA. In most states, the official code is comprised of statutory text alone, and all agreed that a state’s codification cannot be copyrighted because the authorship is ultimately attributable to the people. Conversely, all agreed that annotations created by a private party generally can be copyrighted because the annotations are an original work created by a private publisher. Here, the Eleventh Circuit held that a determinative factor was whether the work was attributable to the constructive authorship of the people, which is to say whether it was created by an agent of the people in the direct exercise of sovereign authority. Of critical importance to the Eleventh Circuit’s analysis was that the Georgia General Assembly was the driving force behind the creation of the annotations, and the Commission exerted direct, authoritative control over the creation of the OCGA annotations at every stage of their preparation. Moreover, the annotations were also subject to the approval of the Georgia General Assembly.

Led Zeppelin Faces Further Legal Concerns on “Stairway”

Skidmore v. Zeppelin, 905 F.3d 1116, 128 U.S.P.Q.2d 1206 (9th Cir. 2018). Randy Wolfe was a member of the rock band Spirit, whose first album, released in the late 1960s, contained a song called “Taurus.” In late 1971, the band Led Zeppelin released their album Led Zeppelin IV, which contained the song “Stairway to Heaven,” one of the most popular rock songs of all time. In light of similarities between the two songs, in 2014, Michael Skidmore, the trustee of a trust established in Wolfe’s name following Wolfe’s death, sued the members of Led Zeppelin and others for copyright infringement. At the district court, a jury returned a verdict in favor of the defendants, finding that the songs were not substantially similar under the extrinsic test applied at trial. Skidmore appealed, challenging several occurrences in the district court, including some jury instructions and the types of recordings the jury was allowed access to. The Ninth Circuit vacated the district court judgment in part, and remanded for a new trial based on deficiencies in jury instructions. Among the instructions to be corrected were that the jury should have been instructed that: (1) the selection and arrangement of otherwise unprotectable musical elements are protectable; and (2) the inverse ratio rule says that a lower amount of proof of substantial similarity is required when greater access to a work is shown.

NFL Can’t Sack Photographer’s Copyright Suit

Spinelli v. National Football League, 903 F.3d 185, 128 U.S.P.Q.2d 1069 (2d Cir. 2018). Paul Spinelli and a group of photographers sued the NFL for copyright infringement based on the NFL using their photographs. The NFL claimed that it had a license to use the photographs based on an agreement between the Associated Press (AP) and the NFL. The district court dismissed the case for failing to state a claim based on the license between the NFL and AP, and the photographers appealed.

The Second Circuit reversed the dismissal. The Second Circuit began by evaluating the license agreements between the NFL and AP. The NFL entered into a license with AP in 2009 for AP to be the exclusive agent and distributor of photographs that contain NFL intellectual property, and AP granted that the NFL had a complimentary license to AP-owned photographs. In 2012, the NFL and AP renewed the agreement, and the 2012 agreement expanded the NFL’s complimentary license to include AP-contributor photographs, such as those taken by Spinelli and the other plaintiffs. AP was to pay royalties to the AP-contributor photographers based on certain sales of the photos the photographers produced. The Second Circuit found that the 2009–2012 photos were not retroactively licensed to the NFL by the 2012 agreement, since the photographers had already accrued a cause of action for copyright infringement before the 2012 agreement between AP and the NFL was executed, and a co-owner may not destroy an accrued cause of action with a license.

Turning to photographs taken after the 2012 agreement, the Second Circuit determined that the intent of the parties was not clear in the contract between AP and the photographers, and therefore a dismissal on the pleadings was improper. The Second Circuit found that the agreement between AP and the photographers was ambiguous on whether the NFL’s uses of the photographs were “qualifying Event Photo Sales” under the agreement. Therefore, the Second Circuit determined that discovery was required to develop the arguments of the parties.



Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 128 U.S.P.Q.2d 1089 (Fed. Cir. 2018). The Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB’s) ruling that the claims were unpatentable for anticipation. The Federal Circuit found that substantial evidence supported the PTAB’s finding that the prior art catalog was publicly accessible prior to the critical date. The Federal Circuit upheld the legal sufficiency of the corroboration requirement, agreeing with the PTAB’s determination that there was sufficient corroboration of testimonies relating to the copy of the catalog and the date of a booth operating.

Assignor Estoppel/Inter Partes Review (IPR)

Arista Networks, Inc. v. Cisco Systems, Inc., 908 F.3d 792, 128 U.S.P.Q.2d 1497 (Fed. Cir. 2018). The Federal Circuit affirmed the PTAB’s decision that assignor estoppel does not apply in IPR proceedings.

Attorney Fees

Gust, Inc. v. AlphaCap Ventures, LLC, 905 F.3d 1321, 128 U.S.P.Q.2d 1356 (Fed. Cir. 2018). The Federal Circuit reversed the district court’s decision finding the patentee’s law firm jointly and severally liable for the attorney fees of the defendant. The Federal Circuit reviewed the case under the laws of the regional circuit. The Federal Circuit found that awards under 28 U.S.C. § 1927 only apply to actions resulting in unreasonable and vexatious multiplication of proceedings, which excludes the filing of a baseless complaint. The Federal Circuit also disagreed with the district court’s findings that the law firm’s actions throughout the case constituted bad faith.

Claim Construction

Wisconsin Alumni Research Foundation v. Apple Inc., 905 F.3d 1341, 128 U.S.P.Q.2d 1242 (Fed. Cir. 2018). The Federal Circuit reversed the district court’s denial of Apple’s judgment as a matter of law for infringement and affirmed the grant of summary judgment that the patent is not invalid. The Federal Circuit agreed that the term “particular” should be given its plain and ordinary meaning, which requires that it be single. That is not the case with Apple’s device.

Collateral Estoppel/Rule 56(d) Motions

ArcelorMittal Atlantique et Lorraine v. AK Steel Corp., 908 F.3d 1267, 128 U.S.P.Q.2d 1557 (Fed. Cir. 2018). The Federal Circuit reversed the district court’s grant of summary judgment of noninfringement. The district court held that ArcelorMittal was collaterally estopped from bringing its infringement claims because the accused products were the same as products found not to infringe a related patent in an earlier litigation. The Federal Circuit reversed, finding that the defendant had failed to meet its burden to prove that there were no material differences between the previous products found not to infringe and the current accused products.

Doctrine of Equivalents/Reasonable Royalty

Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., 904 F.3d 965, 128 U.S.P.Q.2d 1121 (Fed. Cir. 2018). The Federal Circuit upheld the jury’s verdict of infringement, finding that the accused infringer had waived its new claim construction argument on appeal. The Federal Circuit also affirmed the jury’s finding of infringement under the doctrine of equivalents because the accused infringer failed to establish that arguments in the prosecution history created an estoppel. The Federal Circuit did, however, vacate and remand the jury’s damage award, noting that the patentee must estimate what portion of the smallest salable unit is attributable to the patented technology when there are several noninfringing features.


Regents of the University of California v. Broad Institute, Inc., 903 F.3d 1286, 128 U.S.P.Q.2d 1106 (Fed. Cir. 2018). The Federal Circuit affirmed the PTAB’s conclusion that there was no interference-in-fact between UC’s and Broad’s respective patent applications. The Federal Circuit found that this case turned entirely on the substantial evidence standard. Given the mixture of evidence in the record, the Federal Circuit held that substantial evidence supported the PTAB’s finding that there was not a reasonable expectation of success in applying the claimed system to an eukaryotic cell.


Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., 905 F.3d 1311, 128 U.S.P.Q.2d 1183 (Fed. Cir. 2018). Atlanta Gas’s IPR petition filed in 2015 was time-barred under 35 U.S.C. § 315(b). Atlanta Gas was first served with a complaint alleging infringement of the patent in 2012, which was involuntarily dismissed without prejudice. A second complaint alleging infringement of the same patent filed against Atlanta Gas in 2015 did not restart the one-year deadline for filing an IPR.

E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 128 U.S.P.Q.2d 1193 (Fed. Cir. 2018). On appeal from the PTAB’s final written decision in an IPR finding that the claims were not obvious, the Federal Circuit held that the PTAB erred by failing to apply a burden-shifting framework in the context of overlapping prior art ranges and remanded the case. The PTAB also erred in applying the result-effective variables standard, and the challenged claims were obvious.

ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 128 U.S.P.Q.2d 1113 (Fed. Cir. 2018). The Federal Circuit upheld the PTAB’s final written decision in an IPR that the challenged claims in three patents were unpatentable, finding that the PTAB’s ruling that the claims were obvious was supported by substantial evidence.


Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc., 903 F.3d 1310, 128 U.S.P.Q.2d 1001 (Fed. Cir. 2018). The Federal Circuit affirmed the district court’s judgment that the asserted Acorda patent claims were invalid. The Federal Circuit found that the district court did not clearly err in finding there was both a motivation to combine the prior art references and a reasonable expectation of success. The Federal Circuit further found no clear error in the district court’s holding that the Acorda patents were directed toward an active ingredient that was inherent in the prior art. Finally, the Federal Circuit held that the district court properly held that, because a blocking patent may diminish commercial exploitation in the market, the significance of evidence supporting secondary considerations of nonobviousness should be discounted, as it was in the present case.

IXI IP, LLC v. Samsung Electronics Co., 903 F.3d 1257, 128 U.S.P.Q.2d 1041 (Fed. Cir. 2018). The Federal Circuit affirmed the PTAB’s decision that the reviewed claims were unpatentable.

Orexo AB v. Actavis Elizabeth LLC, 903 F.3d 1265, 128 U.S.P.Q.2d 1034 (Fed. Cir. 2018). The Federal Circuit reversed the district court’s judgment of obviousness, which was not proved by clear and convincing evidence. The Federal Circuit found that there was no teaching of the claimed structure in the applied prior art. The benefits of the claimed structure were not predicted or suggested in the prior art.

ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 128 U.S.P.Q.2d 1113 (Fed. Cir. 2018). The Federal Circuit affirmed the PTAB’s holding of certain apparatus claims as being unpatentable and that Qualcomm failed to prove by a preponderance of evidence that the method claims were unpatentable. With respect to the method claims, the Federal Circuit found that no evidence was presented regarding motivation to operate the prior art apparatus in a manner that satisfied the method claims limitation.

Teva Pharmaceuticals USA, Inc. v. Sandoz Inc., 906 F.3d 1013, 128 U.S.P.Q.2d 1301 (Fed. Cir. 2018). The Federal Circuit upheld the district court’s decision of invalidity based on obviousness. The Federal Circuit upheld the district court’s findings that certain phrases in the claims were nonlimiting statements of intended effect, as the language did not change the express doping amount or method already disclosed in the claims. The Federal Circuit found that because the prior art focused on two critical variables and gave clear directions, there was not an impermissible “obvious to try” analysis.

Printed Publication

Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 128 U.S.P.Q.2d 1507 (Fed. Cir. 2018). The Federal Circuit affirmed the PTAB’s determination that a prior art reference was not publicly accessible before the critical date. The prior art reference was a technical report uploaded to a University of California Computer Science and Engineering Technical Reports Library website in 1999. The library was indexed, but only by author and year, and the search feature was found to be deficient. The PTAB determined that an interested artisan would have had to skim potentially hundreds of unrelated titles to find the prior art reference. The Federal Circuit held that substantial evidence supported the PTAB’s conclusion that the prior art reference was not a printed publication under 35 U.S.C. § 102(a) because the library was not indexed in a meaningful way and the search feature was deficient.

GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690, 128 U.S.P.Q.2d 1447 (Fed. Cir. 2018). The Federal Circuit vacated and remanded two IPR decisions after finding that the PTAB erroneously concluded that a GoPro catalog was not a prior art printed publication under 35 U.S.C. § 102(b) and that, therefore, GoPro, the petitioner, could not demonstrate that the challenged claims were obvious under § 103. Since the Federal Circuit found that the catalog in question had been distributed at a trade show for dealers of action sports vehicles and accessories—one of the intended uses of GoPro’s video camera products—the catalog had been sufficiently publicly available to qualify as § 102(b) prior art. Therefore, the Federal Circuit remanded with instructions for the PTAB to consider the GoPro catalog as prior art and evaluate the invalidity assertions.


Natural Alternatives International, Inc. v. Iancu, 904 F.3d 1375, 128 U.S.P.Q.2d 1235 (Fed. Cir. 2018). The Federal Circuit upheld the PTAB’s finding of invalidity. When the claims were filed, the priority to certain applications had lapsed due to deletion of reference to them in previous filings. The Federal Circuit agreed with the PTAB that by deleting the reference in previous filings, the “specific reference” requirement of 35 U.S.C. § 120 was not satisfied.

USPTO Rulemaking

Hyatt v. USPTO, 904 F.3d 1361, 128 U.S.P.Q.2d 1163 (Fed. Cir. 2018). The Federal Circuit held that the district court properly granted summary judgment in favor of the USPTO because the claims in Gilbert Hyatt’s petition for rulemaking were either time-barred or relied on an incorrect statutory interpretation. However, the district court erred in finding that it did not have subject matter jurisdiction over Hyatt’s suit challenging the USPTO’s denial of his petition for rulemaking.

Real Party in Interest

Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 128 U.S.P.Q.2d 1252 (Fed. Cir. 2018). The Federal Circuit vacated the PTAB’s time-bar and unpatentability determinations, finding that the PTAB applied an unduly restricted test for determining whether a person or entity is a “real party in interest” and failed to consider the entire evidence. The Federal Circuit found that the term “real party in interest” should be interpreted broadly based on the statute’s inclusion of “privy of the petitioner” as well. The Federal Circuit stated that the focus of the real-party-in-interest inquiry is on the patentability of the claims in the IPR petition, bearing in mind who will benefit from having those claims canceled or invalidated.

Subject Matter Eligibility

Ancora Technologies, Inc. v. HTC America, Inc., 908 F.3d 1343, 128 U.S.P.Q.2d 1565 (Fed. Cir. 2018). The Federal Circuit reversed the district court’s grant of HTC’s motion to dismiss for patent-ineligible subject matter under 35 U.S.C. § 101. The claims were directed to a method for identifying and restricting an unauthorized software program from operating on a personal computer. The asserted innovation related to storing license record information in basic input output system (BIOS) memory and then comparing that with other memory to check for permission to run a software program that is introduced in the computer. The patent owner explained how the BIOS memory is more difficult to hack and the method used this existing hardware to create a more secure and more cost-effective software blocker. The Federal Circuit concluded that the asserted claim was not directed to an abstract idea and the claims passed Alice step one.

Data Engine Technologies LLC v. Google LLC, 906 F.3d 999, 128 U.S.P.Q.2d 1381 (Fed. Cir. 2018). The Federal Circuit affirmed in part, reversed in part, and remanded the district court’s findings that the claims were ineligible under 35 U.S.C. § 101. The Federal Circuit found that claims relating to utilizing tabs on spreadsheets in software were patent eligible for making the spreadsheet program more user-friendly. The Federal Circuit found that the idea of tabs was not abstract; the claims as a whole created a functional improvement. Other claims were held to be patent ineligible as being directed to an abstract idea instead of a patentable improvement.

Roche Molecular Systems, Inc. v. Cepheid, 905 F.3d 1363, 128 U.S.P.Q.2d 1221 (Fed. Cir. 2018). The Federal Circuit held that claims directed to primers and methods for detecting tuberculosis were invalid under 35 U.S.C. § 101. First, the Federal Circuit reasoned that the primers recited in the claims were indistinguishable from their corresponding sequences in natural DNA. Second, the Federal Circuit found that the method claims were directed to naturally occurring phenomena and did not contain an inventive concept that transformed them into patent-eligible subject matter.


In re Oath Holdings Inc., 908 F.3d 1301, 128 U.S.P.Q.2d 1570 (Fed. Cir. 2018). Addressing Oath Holdings’ second petition for a writ of mandamus on the same issue—the first of which was denied—the Federal Circuit granted mandamus and remanded the case, instructing the district court to either dismiss or transfer the case. The Federal Circuit found that venue was improper in the Eastern District of New York because Oath is not incorporated in New York and does not have a regular and established place of business in the Eastern District. Oath had not waived its right to contest the propriety of venue under 28 U.S.C. § 1400(b) because it filed a motion to dismiss the case for improper venue within 21 days following the Supreme Court’s decision in TC Heartland.

Trade Secrets

AirFacts, Inc. v. De Amezaga, 909 F.3d 84 (4th Cir. 2018). AirFacts argued that the defendant misappropriated certain proprietary information (flowcharts) that contained an overview of certain publicly available information. The district court concluded that the flowcharts were not trade secrets because they were simply an overview of public information that AirFacts did not own. The Fourth Circuit reversed. The defendant’s painstaking arrangement of the information in the flowcharts made it inherently valuable separate and apart from the publicly available contents. The flowcharts thus constituted trade secrets.

iSentium, LLC v. Bloomberg Finance L.P., No. 17-cv-7601, 2018 WL 6025864, 2018 U.S. Dist. LEXIS 196292 (S.D.N.Y. Nov. 16, 2018). The plaintiff’s description of the trade secret as “transformation technologies for graphing and displaying” information to assist users in “digesting massive amounts of analyzed data” was sufficient to provide Bloomberg with notice of the claimed trade secret allegedly being misappropriated. Thus, the motion to dismiss the trade secret misappropriation claim was denied.

Medidata Solutions, Inc. v. Veeva Systems Inc., No. 17 Civ. 589, 2018 U.S. Dist. LEXIS 199763 (S.D.N.Y. Nov. 26, 2018). Medidata’s complaint sufficiently identified the trade secrets at issue. The complaint alleged that the plaintiff took reasonable steps to protect the trade secrets and that the trade secrets derived economic value from being kept secret and sufficiently alleged that Veeva misappropriated Medidata’s trade secrets. The motion to dismiss the trade secret misappropriation claim was denied.

Morgan v. Clements Fluids South Texas, Ltd., No. 12-18-00055-CV, 2018 WL 5796994, 2018 Tex. App. LEXIS 9061 (Nov. 5, 2018). A former employee had no knowledge or experience in salt systems except for working for his prior employer. The former employee then became employed by a company that was not performing salt systems, but launched a salt systems business on the arrival of the former employee, including performing a salt systems job for one of the former employer’s customers. Proof of a trade secret misappropriation often depends on circumstantial evidence. Here, the former employer had established a prima facie trade secret misappropriation case.

Prime Therapeutics LLC v. Beatty, No. 18-cv-02715, 2018 WL 5669270, 2018 U.S. Dist. LEXIS 187883 (D. Minn. Nov. 1, 2018). A motion for a preliminary injunction against a former employee was denied. The district court noted that a preliminary injunction is an extraordinary remedy. The existence of trade secrets, without more, is not enough to justify the issuance of a preliminary injunction. There was no evidence of actual misappropriation. The plaintiff did not meet the heavy burden of showing at this early stage in the litigation that the plaintiff’s trade secrets were threatened by the former employee’s departure to a competitor. Thus, the motion for preliminary injunction was denied.



Real Foods Pty Ltd. v. Frito-Lay North America, Inc., 906 F.3d 965, 128 U.S.P.Q.2d 1370 (Fed. Cir. 2018). Appellant Real Foods sought registration of the following marks: (1) CORN THINS, for “crispbread slices predominantly of corn, namely popped corn cakes”; and (2) RICE THINS, for “crispbread slices primarily made of rice, namely rice cakes.” Frito-Lay opposed Real Foods’ applications on the grounds that the marks are generic or descriptive without having acquired distinctiveness. The Trademark Trial and Appeal Board (TTAB) refused registration of the marks as being descriptive and not having acquired distinctiveness but dismissed the claim for genericness. Both parties appealed. The Federal Circuit affirmed the TTAB’s decision to refuse registration on the basis that the marks are merely descriptive but remanded the issue of genericness back to the TTAB for further consideration.

The Federal Circuit found that there was substantial evidence to support the TTAB’s holding that the proposed marks are highly descriptive. The Federal Circuit also found that there was substantial evidence in support of the TTAB’s holding that the proposed marks have not acquired distinctiveness. Given that Real Foods had spent relatively little on advertising and that its overall sales figures were not high, the Federal Circuit determined that the proposed marks have not acquired distinctiveness. The Federal Circuit also mentioned third-party research and Frito-Lay’s expert survey in support of its finding that the marks had not acquired distinctiveness. The Federal Circuit found that the TTAB failed to properly apply the test for genericness in its opinion because the TTAB neglected to consider the goods as amended when determining their genus.

Foreign Equivalents/Descriptive Marks

In re S. Malhotra & Co. AG, 128 U.S.P.Q.2d 1100 (T.T.A.B. 2018). Malhotra filed two trademark applications under section 66(a) of the Trademark Act for the marks GÁMOS, in standard characters and in non-Latin characters, in connection with “precious metals and their alloys and goods made of these materials or coated therewith included in this class, namely, jewelry and watches.” Upon translation, the marks mean “wedding, matrimony or marriage.” The applications were refused as merely descriptive of a feature of Malhotra’s goods under section 2(e)(1) of the Trademark Act. Malhotra appealed.

Applying the doctrine of foreign equivalents, the TTAB determined that the ordinary American purchaser familiar with the Greek language would stop and translate the word into the English equivalent. The TTAB further found that “wedding,” “matrimony,” and “marriage” have highly related meanings and that “wedding” is descriptive of jewelry. Moreover, the marks would not be considered double entendres as there was no evidence that consumers would be likely to understand the marks to have a second, nondescriptive meaning. Thus, the TTAB found that a consumer of Malhotra’s jewelry, familiar with the Greek language, would immediately understand the marks to convey that they may be used in association with weddings and, accordingly, the refusals were affirmed.

USITC/Secondary Meaning and Infringement Analyses

Converse, Inc. v. International Trade Commission, 128 U.S.P.Q.2d 1538 (Fed. Cir. 2018). Under the Tariff Act of 1930, the U.S. International Trade Commission (USITC) found that Converse’s registered trademark for the midsole design of its Chuck Taylor All Star shoes was invalid and that there was no violation by importation of accused products of other shoemakers. Converse’s midsole design trademark included the trade dress including two stripes on the midsole, the design of the toe cap, and the multilayered toe bumper featuring diamonds and line patterns. Converse filed a complaint with the USITC for the importation into the United States, the sale for importation, and the sale within the United States of shoes that infringed its trademark. The Federal Circuit determined that the USITC applied the wrong standards for invalidity and infringement and remanded.

Specifically, the Federal Circuit determined that the USITC failed to determine the relevant date for the secondary-meaning analysis. The Federal Circuit concluded that Converse’s registration conferred a presumption of secondary meaning as of the date of registration but conferred no presumption before that date. Thus, where the accused infringers’ first uses came before the registration date, Converse had to establish that its mark had acquired secondary meaning before the first infringing use of each accused infringer.

The Federal Circuit also found that the USITC had applied the wrong legal standard for determining secondary meaning. The Federal Circuit clarified that the following six factors should be assessed and weighed together in determining whether a mark has acquired secondary meaning: (1) association of the trade dress with a particular source by actual purchasers; (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark. The Federal Circuit also indicated that, when evaluating the second factor, the USITC should rely on uses within the last five years. Uses older than five years should be considered only if there is evidence that such uses were likely to have impacted consumer perceptions of the mark. On the issue of determining likelihood of confusion, due to the USITC’s inconsistent application of its likelihood of confusion analysis, the Federal Circuit found that the USITC should reassess the accused products to determine whether they were substantially similar in the infringement analysis.

Likelihood of Confusion

In re Detroit Athletic Co., 903 F.3d 1297, 128 U.S.P.Q.2d 1047 (Fed. Cir. 2018). Applicant Detroit Athletic Co. appealed the TTAB’s decision after receiving a refusal to register the mark DETROIT ATHLETIC CO. on the basis of a likelihood of confusion with the prior registered mark DETROIT ATHLETIC CLUB, owned by the Detroit Athletic Club (registrant). The Federal Circuit affirmed the TTAB’s decision.

The Federal Circuit agreed with the TTAB regarding the DuPont factors. Namely, the Federal Circuit found the marks to be nearly identical in sound, appearance, and commercial impression, and found that the goods and services sufficiently overlapped to support a finding of consumer confusion. The TTAB found that the applicant’s retail store services were sufficiently related to the registrant’s apparel, based in part on evidence demonstrating several third-party retailers selling branded sports clothing. The Federal Circuit affirmed that the real-world conditions of the parties’ private social club versus the applicant’s clothing store services was not relevant to the analysis.


John C. Gatz

John C. Gatz is a member of the firm Nixon Peabody in Chicago, Illinois.


Column contributors include the following writers: Copyrights: Zachary J. Smolinski, Smolinski Rosario Law P.C.; Michael N. Spink, Brinks, Hofer, Gilson & Lione; and Mark R. Anderson, Akerman LLP. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter, and Andrew M. McCoy, Faegre Baker Daniels LLP; Robert W. (Bill) Mason, Harness, Dickey & Pierce; and Angelo Christopher, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan, FisherBroyles LLP. Trademarks: Elizabeth W. Baio, Jenni Wiser, and Alexis Grilli, Nixon Peabody LLP; and Amy L. Sierocki, Blumenfield & Shereff LLP.